This material was first published by Sweet & Maxwell in European Intellectual Property Review, ‘Cofemel v G-Star Raw (C-683/17) and its effect on UK copyright law before and after Brexit’, 42 EIPR Issue 3 2020 and is reproduced by agreement with the Publishers.
The only requirement for a design to qualify for copyright protection in the EU is originality, according to the highly anticipated decision of the Court of Justice of the European Union (CJEU) in Cofemel v G-Star Raw (C-683/17) on 12 September 2019. The Court’s judgment on the interpretation of the reproduction right under art.2(a) of Directive 2001/29 (the InfoSoc Directive) will be welcomed by designers across the EU and may well require amendments to be made to the national copyright laws of certain EU Member States, including in particular the UK.
In 2013, the clothing company G-Star accused the fashion label Cofemel of infringing their copyright in respect of several items of clothing. In particular, G-Star argued that their ARC and ROWDY jeans and t-shirt designs were original intellectual creations and therefore “works” that are entitled to copyright protection. Cofemel argued the opposite; that the items of clothing did not qualify as “works” and should therefore not be protected.
The Portuguese Court of First Instance agreed with G-Star and ordered Cofemel to stop infringing G-Star’s copyright and to pay an account of profits. The Court of Appeal confirmed this decision. The case then made its way to the Portuguese Supreme Court, which considered that the clothing in question was the result of innovative concepts and manufacturing processes containing a number of specific elements, and that Cofemel used some of these in the manufacture of their clothing. However, the Supreme Court decided that Portuguese law does not specify the degree of originality that is required for these types of works to qualify for protection. Therefore, they made a referral to the CJEU for a preliminary ruling on the interpretation of art.2(a) of the InfoSoc Directive, asking whether EU law precludes national laws from giving copyright protection to design works which generate a significant aesthetic effect on the basis of any other criteria apart from originality.
The InfoSoc Directive
Article 2(a) of the InfoSoc Directive contains the reproduction right. It sets out that Member States shall provide authors with the exclusive right to authorise or prohibit reproductions of their works by any means and in any form. However, the Directive does not define the concept of “work”, so the CJEU decision focuses on this aspect to answer the question referred to it.
The concept of a “work” has been discussed in a number of previous CJEU decisions and is now considered to be settled. As was set out in Infopaq (C-5/08), it is an autonomous notion in EU law which requires uniform interpretation.
Infopaq also removed the possibility of different standards of copyright protection for different categories of work; if a work falls within the scope of the InfoSoc Directive, it is only required to be the “author’s own intellectual creation”, which is something for the national courts to ascertain.
In the CJEU’s earlier decision in Flos (C-168/09), the CJEU held that EU law did not permit Member States to deny copyright protection to designs which met the criteria for such protection. It also went on to suggest that it was not possible for Member States to set further requirements outside those in the EU legislation for how such copyright protection could be secured. The interpretation of Flos in the UK led to the repeal of s.52 of the Copyright, Designs and Patents Act 1988 (CDPA), which previously reduced the duration of copyright protection for many designs to 25 years.
In its decision in Cofemel, the CJEU has confirmed that there are two cumulative requirements essential to qualify as a work:
- Existence of an original object and expression of intellectual creation
The work in question must represent and express “an intellectual creation” of its author. This will be the case where an author has free and creative choices, but not where the making of an object has been determined by technical considerations, rules or other constraints, which do not leave room for any creative freedom.
- The subject-matter must be identifiable with sufficient precision and objectivity
Being able to identify the subject-matter of the work should contain no element of subjectivity. The work should be expressed in a manner which makes it clearly identifiable, even though its expression does not necessarily have to be in permanent form (as previously noted by the CJEU in the recent case of Levola Hengelo (C-310/17)). If a design falls within the scope of the InfoSoc Directive, then the only requirement for copyright protection is that the design is a “work”.
Once a design has fulfilled the two originality requirements above, copyright protection arises automatically. National laws which make copyright protection dependent on artistic value or have an artistic intention requirement, are not acceptable and therefore art.2(a) of the InfoSoc Directive must be interpreted as precluding national law from basing copyright protection on such criteria.
This judgment has opened a potential can of worms for UK copyright. Under the current CDPA, certain types of copyright work have other requirements in addition to originality in order to acquire copyright protection. The UK’s category of “artistic work” will have to be re-assessed, although the change is likely to be welcomed by designers as it appears to lower the bar for qualification of copyright protection.
The CDPA, in s.4, provides that an “artistic work” means “a graphic work, photograph, sculpture or collage, irrespective of artistic quality”, as well as works of architecture and works of artistic craftsmanship. However, the UK Courts have not always interpreted this provision broadly. In Lucasfilm, the Supreme Court upheld the trial judge’s decision that the appearance of the Stormtrooper helmet made famous from the Star Wars films did not attract copyright protection as a “sculpture” because it had a primarily functional purpose rather than an artistic one. The Supreme Court appeared to approve of Laddie J’s definition of sculpture in Metix (UK) Ltd v G H Maughan (Plastics) Ltd  as being “a three dimensional work made by an artist’s hand”. Similarly, following a series of judgments from the UK and other Commonwealth country courts, a “work of artistic craftsmanship” (such as certain items of furniture or jewellery, for example) requires elements of craftsmanship and artistic appeal before it will be found to attract copyright protection.
Seemingly, these decisions are now incompatible with this CJEU decision in Cofemel as they seek to impose additional criteria in order for a work to be protected by copyright as a sculpture or a work of artistic craftsmanship beyond the expression of the author’s own intellectual creation.
With the judgment considered to be binding on UK Courts, it will be interesting to see how a case like this will be interpreted in the future, and whether the UK Court’s assessment of originality changes in light of this decision.
The decision in Cofemel will also impact on other EU countries. For example, Portuguese national law has a requirement for “aesthetic effect” which the CJEU confirmed in the case is incompatible with the above originality requirements; whether a work creates an aesthetic effect does not determine whether its creation was an author exercising free and creative choices and implies a subjective assessment contrary to the second requirement of objectivity laid down by the CJEU. Other Member States such as Italy and Germany, also have some level of artistic requirement for copyright to subsist.
In addition, if the only criterion for copyright protection to arise is originality, there is an implication that exhaustive lists of protectable subject-matter, such as that contained in the CDPA, would also be incompatible with EU law. UK copyright law only recognises a prescribed list of defined “works” which attract copyright protection. This may have to change in light of this decision. According to the CJEU, protection only arises when there is a work in the sense clarified by the Court: no other requirements are needed. Copyright protection cannot arise with different conditions being met depending on which “category” of work the object at issue belongs to.
Cofemel also questions the fixation requirement. The Berne Convention leaves it to individual signatory countries to decide on their own approach to fixation, but is that true for EU Member States? It appears not—the CJEU approach to EU copyright requires a harmonised approach to fixation across the EU. This means that there cannot be different choices regarding understandings of fixation: the approach should be uniform across the EU and be the one mandated in Levola Hengelo and Cofemel, namely the existence of an identifiable object with sufficient precision and objectivity.
As a Member State of the EU, the UK will have to comply with the CJEU ruling until Brexit takes place, and may well have to follow the ruling after this date. This may involve having to remove the specific and definitive list of works set out in the CDPA and replace it with a more all-encompassing definition of a copyright work. After Brexit, whether there is a deal or not, the CJEU decision will be considered to be binding on the UK’s lower courts in the same way that Supreme Court judgments are. It is possible that we will see a case on this point reach the UK Supreme Court in the next few years, and, as it may well be one issue where UK judges would consider departing from EU law, this may be one of the first areas where we see UK copyright protection diverge from the position in the EU.
 In Infopaq, a media monitoring service made digital copies of physical newspaper articles and produced printed summaries which incorporated extracts from those articles without obtaining consent from the newspaper publishers to do so. The CJEU held that the reproduction in the summaries of 11 consecutive words from the articles could be a reproduction “in part” within the meaning of the InfoSoc Directive if that “part” contained an expression of “the author’s own intellectual creation”.
 Levola Hengelo BV v Smilde Foods BV (C-310/17) EU:C:2018:899;  Bus. L.R. 2442 was a copyright case which considered the definition of a “work”. Levola argued that the taste of their cream cheese was protected by copyright and the defendant’s reproduction of that taste in their product was an infringement. The CJEU was asked whether the taste of a food product was something that was protectable under the Copyright Directive. They held that taste could not be considered to be a “work” and therefore was not eligible for protection. A work needs to be an original intellectual creation and an expression of that creation. The Court decided that the taste of a product could not be identified with sufficient precision and objectivity and so should not be capable of copyright protection. They did however confirm that the expression does not necessarily have to be in permanent form.
 Metix (UK) Ltd v G H Maughan (Plastics) Ltd  F.S.R. 718 Ch D. In this case, the claimant tried to argue that copyright subsisted in a mould which it used to make cartridges because it was a sculpture. The judge disagreed. He thought that it was not possible to say with precision what is and what is not a sculpture, but that there was no reason for the definition in the CDPA to be extended beyond the meaning the word has to ordinary members of the public. Nothing suggested that the manufacturers of the moulds considered themselves to be artists or that anything other than functional criteria had been considered when the moulds were designed.